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Pagination

* BL

United States District Court, N.D. Illinois

SKYLINE DESIGN, INC., Plaintiff, v. MCGRORY GLASS, INC., Defendant.

No. 1:12-cv-10198

January 23, 2014.

MEMORANDUM OPINION AND ORDER

Edmond E. Chang, District Judge

Plaintiff Skyline Design, Inc. brought this lawsuit against Defendant McGrory Glass, Inc., alleging that McGrory

violated a federal copyright law, 17 U.S.C. § 501, by "importing, distributing, offering for sale, and selling"

"architectural glass bearing decorative etchings" that infringe Skyline's copyright. R. 30, Amend. Compl. ¶ 1.[fn1]McGrory now moves for judgment on the pleadings under Federal Rule of Civil Procedure 12(c), R. 25, Mot. J.

Pleadings, and to dismiss for failure to state a claim under Rule 12(b)(6), R. 32, Mot. Dismiss. For the reasons

discussed below, both motions [R. 25, 32] are denied.

I. Background

In 2003, Skyline created an etching design for architectural glass and named it "the Sateen." Amend. Compl. ¶ 16.

Three years later, Skyline submitted a copyright application for "Sateen," disclosing a glass panel with a pattern of 

randomly spaced lines of varying widths etched into both sides. Mot. Dismiss, Exh. 1. Several photographs were

included with the application: a color photo of Sateen and black-and-white views of the pattern used in Sateen at

scales of 100%, 116%, 132%, and 164%. Mot. Dismiss, Exh. 1; Amend. Compl., Exh. A. In the "Nature of Authorship

section on the Sateen copyright application Form VA, Skyline initially marked "3-Dimensional sculpture," "2-Dimensional artwork," and "Architectural work." Amend. Compl., Exh. A. In describing the "Nature of this Work,"

Skyline wrote "Decorative Architectural Glass Etching." Id. And in its materials deposited with the Copyright Office,

Skyline stated that Sateen was "TWO SIDED," a "Surface etch pattern on two sides," and that there were "Patterns o

both sides." Id.

On July 12, 2006, Copyright Examiner Cynthia Hutchins informed Skyline that Sateen could not be registered as

claimed because "there doesn't appear to be anything in the deposit material to support claims in '3-Dimensional

Sculpture' and 'Architectural Work.'" Mot. Dismiss, Exh. 1. On Hutchins's recommendation, Skyline agreed to amend

its application by removing the claims for "3-Dimensional Sculpture" and "Architectural Work," leaving only the claim

for "2-Dimensional Artwork." Id. In response to a separate concern by Ms. Hutchins concerning the originality of 

Sateen, Skyline noted that when the Sateen pattern is "etched on the front and back of a piece of glass the slightly 'o

character on both sides creates a discontinuity in the glass that . . . gives [Sateen its] copyrightable and uniquecharacter." Id. Eventually, the Copyright Office issued the copyright certificate for Sateen, under U.S. Copyright

Registration No. VA 1-364-683 (the Sateen Copyright). Amend. Compl. ¶ 17; id. Exh. A.

In April 2007, Skyline sent a cease and desist letter to McGrory containing a copy of the Sateen Copyright, alleging

that McGrory was infringing the Sateen Copyright. Amend. Compl. ¶ 44. McGrory then reviewed its product line, but

did not identify any of its products as substantially similar [ 2] to the Sateen Copyright, and asked Skyline for 

additional information regarding the basis for the infringement allegation. Id. ¶ 43 . Skyline did not respond to

McGrory's request for additional information until August 28, 2012, when Skyline sent McGrory a second letter allegin

Skyline Design, Inc. v. McGrory Glass, Inc., No. 1:12-cv-10198, 2014 BL 18037 (N.D. Ill. Jan. 23, 2014), Court Opinion

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infringement of the Sateen Copyright. Id. ¶ 43 ; Amend. Compl. ¶ 44.

In December 2012, Skyline filed this lawsuit against McGrory. R. 1, Compl. Skyline alleges that McGrory infringes the

Sateen Copyright by importing, offering for sale, and/or selling glass that it designates "MII-247." Amend. Compl. ¶ 4

MII 247 is supplied to McGrory by OmniDecor, S.p.A. under the name "Bi-Rain," R. 23, Amend. Answer ¶ 24, and is

glass panel with a pattern of parallel lines etched into both sides, Id. Exh. 2. OmniDecor also supplies McGrory with a

glass panel that uses the same pattern as MII-247 but only etched on a single side. Id. Exh. 1. The single-sided

version is supplied under the name "Rain." Id. ¶ 50 . McGrory offers Bi-Rain glass for sale in the United States. Id. ¶

27 .

II. Legal Standards

A. Motion for Judgment on the Pleadings

 A party may move for judgment on the pleadings after the pleadings are closed. Fed.R.Civ. P. 12(c). A motion for 

 judgment on the pleadings is subject to the same standard as a motion to dismiss under Rule 12(b)(6). N. Ind. Gun &

Outdoor Shows, Inc. v. City of South Bend , 163 F.3d 449, 452 (7th Cir. 1998). In ruling on a motion for judgment on

the pleadings, the Court must "accept as true all well-pleaded allegations," Forseth v. Vill. of Sussex , 199 F.3d 363,

368 (7th Cir. 2000), and view the alleged facts in the light most favorable to the non-moving party, Flenner v.

Sheahan , 107 F.3d 459, 461 (7th Cir. 1997). Judgment on the pleadings is proper if it appears beyond doubt that the

non-moving party can prove no set of facts sufficient to support its claim for relief. Id . In ruling on a motion for 

 judgment on the pleadings, the Court considers the pleadings alone, which consist of the complaint, the answer, and

any documents attached as exhibits. N. Ind., 163 F.3d at 452.

B. Motion to Dismiss

"A motion under Rule 12(b)(6) challenges the sufficiency of the complaint to state a claim upon which relief may be

granted." Hallinan v. Fraternal Order of Police Chicago Lodge No. 7 , 570 F.3d 811, 820 (7th Cir. 2009). "[W]hen rulin

on a defendant's motion to dismiss, a judge must accept as true all of the factual allegations contained in the

complaint." Erickson v. Pardus , 551 U.S. 89, 94 (2007). A "complaint must contain sufficient factual matter, accepted

as true, to 'state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal , 556 U.S. 662, 678 (2009) (quoting Be

 Atl. v. Twombly , 550 U.S. 544, 570 (2007)). These allegations "must be enough to raise a right to relief above the

speculative level." Twombly , 550 U.S. at 555. And the allegations that are entitled to the assumption of truth are thos

that are factual, rather than mere legal conclusions. Iqbal , 556 U.S. at 679.

III. Analysis

McGrory moves to dismiss Skyline's amended complaint and for judgment on the pleadings. First up for discussion is

the motion for judgment on the pleadings, which turns out to be the broader motion — in the sense that if the

amended complaint survives the motion for judgment on the pleadings, it will survive the dismissal motion, too. That

because McGrory [ 3] attached exhibits to its pleading and relies on those exhibits in support of the motion for 

 judgment on the pleadings. So McGrory's motion for judgment on the pleadings has more ammunition than the

dismissal motion. For the reasons that follow, the Court denies both motions.

A. Motion for Judgment on the Pleadings

To prove copyright infringement, a plaintiff must show "(1) ownership of a valid copyright, and (2) copying of 

constituent elements of the work that are original." Janky v. Lake Cnty. Convention & Visitors Bureau , 576 F.3d 356,

361 (7th Cir. 2009) (citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)). "Because direct

evidence of copying often is unavailable, copying may be inferred where the defendant had access to the copyrighted

work and the accused work is substantially similar to the copyrighted work." Atari, Inc. v. N. Am. Philips Consumer 

Elec.s Corp., 672 F.2d 607, 614 (7th Cir. 1982).

Skyline Design, Inc. v. McGrory Glass, Inc., No. 1:12-cv-10198, 2014 BL 18037 (N.D. Ill. Jan. 23, 2014), Court Opinion

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 A copyright registration made either before publication or within five months after the initial publication constitutes

prima facie evidence of the validity of the copyright and of the facts stated in the certificate. See 17 U.S.C. § 410(c).

The certificate in this case was issued within that time frame, so the prima facie presumption arises. Against this,

McGrory argues that the Sateen pattern is not copyrightable because it lacks creativity. As a fall-back argument,

McGrory contends that, even if Sateen is copyrightable, what Skyline claimed in the copyright application process is

very narrow and not infringed by McGrory's patterns. And as final argument, even if Skyline has a valid copyright in

what Skyline says is the scope of the copyright, McGrory maintains that McGrory's patterns are not substantiallysimilar to Sateen.

1. Copyrightable Material

The first issue is whether the material claimed in the Sateen Copyright is even copyrightable at all. To be

copyrightable a work must (1) be created independently by the author, and (2) possess a modicum of creativity. Feis

Publ'ns, Inc., 499 U.S. at 345; see, e.g., Fooey Inc. v. Gap, Inc. , No. 12 C 5713 , 2013 WL 2237515 , at *2-3 (N.D. Ill.

May 17, 2013) (noting that angling and the inclusion of a "single loop" in a line meet the creativity requirement from

Feist ). Moreover, copyright expression extends only to works and not to ideas. 17 U.S.C. § 102(b); Roulo v. Russ 

Berrie & Co., 886 F.2d 931, 939 (7th Cir. 1989).

The authorship requirement is not at issue; McGrory has not alleged, nor do the pleadings suggest, that Skyline did

not independently create the Sateen pattern etched on glass. McGrory instead argues that many elements of the

Sateen pattern are not copyrightable because they are insufficiently original or because they fall on the wrong side of

the idea vs. expression dichotomy. For instance, McGrory argues the Sateen Copyright attempts to copyright the ide

of woven fabric on glass, the idea of varied lines on glass, and the vertical application of the Sateen pattern to glass.

R. 25, Judgment Pleadings at 8-11. McGrory also argues that the pattern is too utilitarian and simple to achieve

copyright protection. Id. The Court does not agree.

The deposit that Skyline registered with the Copyright Office possesses more than a [ 4] mere modicum of creativity

The vertical lines are of varied widths, are unevenly spaced, and subtly run toward (and then away from) one anothe

splitting and rejoining. The effect of this is to create a sort of rhythm, both from side-to-side, as well as vertically down

the two-dimensional surface — not altogether unpleasing to the eye even when etched on only one side of the glass.Like paintings that do not purport to depict specific objects, the design is non-representative, consisting of a collectio

of abstract shapes. And, like paintings that do not purport to depict specific objects, the abstractness of the design

does not  render it unoriginal or non-creative. This is not merely the copyrighting of the idea of woven fabric on

glass, or the idea of varied lines, but rather the expression of those ideas via a creative and original design. [fn2]

 Although there is some utilitarian value (light diffusion and privacy) to having the Sateen pattern on glass, that

utilitarian value does not foreclose the copyrightability of the pattern.

2. Scope of the Registration

Turning now to McGrory's registration-scope argument, Skyline says that the Sateen Copyright covers a two-

dimensional but double-sided  piece of glass that has the Sateen pattern etched on both sides. Pl's Opp. to Defs Mot

to Dismiss at 4 (citing the Sateen Copyright's registration history). McGrory counters that because Skyline marked th"Nature of Authorship" box labeled "2-dimensional artwork" on its copyright application, the Sateen Copyright can on

cover a single-sided , two-dimensional Sateen pattern. Mot. Dismiss at 5-6. As explained next, the Court largely agree

with Skyline: Skyline's copyright protects the double-sided Sateen pattern on glass.

Before explaining why the double-sided pattern is protected, however, it is worth noting that the Court does not

endorse Skyline's broadest argument on this issue. Skyline argues that it is possible for an ostensibly three-

dimensional item, such as a piece of paper, to be double-sided and receive copyright protection as a two-dimensiona

double-sided work. Even if that proposed principle is correct, it does not apply here. A piece of paper may be literally

three-dimensional, but its third dimension — the thickness of the a er — is so ne li ible that the desi n on a er 

Skyline Design, Inc. v. McGrory Glass, Inc., No. 1:12-cv-10198, 2014 BL 18037 (N.D. Ill. Jan. 23, 2014), Court Opinion

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3. Copyright Infringement

The final issue is whether Skyline has sufficiently pled that its copyright is infringed by McGrory's glass patterns. The

Seventh Circuit uses the substantial similarity test to determine whether a copyright has been infringed. Wildlife 

Express Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 508-09 (7th Cir. 1994). The first step under this test is to ask

whether the alleged infringer had access to the copyrighted work. Id. at 508. Once access is established, the Court

considers whether an ordinary observer would consider the allegedly infringing work to be substantially similar to thecopyrighted work. Id. at 508-09.

Skyline alleges that McGrory had access to the copyrighted work because Skyline published examples of the glass

etched with the Sateen pattern in print, in person, and online. R. 40-6, Newmark Decl. ¶¶ 14-15. With regard to online

publication, in 2003, Skyline first published the Sateen pattern at www.skydesign.com/products/glass. The Internet

already was widely used and accessible at that time. Because the non-movant is entitled to reasonable favorable

inferences in evaluating a motion for judgment on the pleadings, the online publication is enough to establish access

for purposes of denying McGrory's motion for judgment on the pleadings.

On the substantial-similarity element, the parties take differing views as to how the works should be evaluated. Skylin

argues for a test that asks how a purchaser of architectural glass would view the two works, Pl.'s Opp. at 7-8, whichwould mean viewing the glass from a wider perspective. In contrast, McGrory advocates a more technical analysis,

where the viewer would look up-close at small samples of each pattern. See  Mot. Judgment Pleadings at 13. Both

Skyline's and McGrory's proposed viewpoints miss the mark. First, although other circuits have adopted [ 7] different

tests for substantial similarity in varying circumstances, the Seventh Circuit has consistently held that substantial

similarity is analyzed from the point of view of an ordinary observer. See, e.g., Incredible Techs., Inc. v. Virtual 

Techs., Inc., 400 F.3d 1007, 1011 (7th Cir. 2007) ("[W]hether the copying, if proven, went so far as to constitute an

improper appropriation . . . leads us to the 'ordinary observer' test." (internal quotation omitted)). Second, an ordinary

observer would not parse small sections of the glass, as McGrory advocates, but rather would take in the glass as a

whole as it would be installed in a building.

 Applying this test here, the first comparison to make is between the single-sided Sateen pattern versus the single-

sided Rain pattern. As glass designed to be installed in buildings, the glass is likely to be viewed in large swathsstretching both vertically and horizontally from several feet away. Viewed in this context, an ordinary observer looking

at both Sateen and Rain etched on a single side of glass could consider them substantially similar. Both designs hav

repeated lines of similar yet varying widths and spacing etched into the glass, and look substantially similar when

viewed in full from several feet away. Although there are differences in the patterns — Sateen's lines are subtly wavy

while Rain's lines are perfectly parallel, see  Mot. Judgment Pleadings at 13-14 — these differences are minimal and

do not destroy the substantial similarity between the two. Likewise, the Bi-Rain and two-sided Sateen designs each

constitute double-sided versions of the pattern, slightly offset from front-to-back. The effect of the visual repetition is

nearly identical: both designs produce a very similar shimmering appearance as the angle of view changes. If 

anything, the double-sided patterns on glass are even more similar than the single-sided patterns. Thus, for both the

Rain and Bi-Rain patterns, the Court concludes that Skyline survives a motion for judgment on the pleadings.

B. Motion to Dismiss

 As noted above, surviving the motion for judgment on the pleadings means, in this case, surviving the dismissal

motion. In its amended complaint, Skyline alleges that McGrory has infringed the Sateen Copyright by "making,

distributing, importing, offering for sale, and/or selling decorative etched architectural glass." Amend. Compl. ¶ 52. In

the dismissal motion, McGrory again argues that the Sateen Copyright protects only the single -sided, two -dimension

Sateen pattern. R. 32, Mot. Dismiss at 4-5. Based on that construction of the Sateen Copyright, McGrory further 

argues that the amended complaint does not meet the requirements of Federal Rule of Civil Procedure 8 because th

Skyline Design, Inc. v. McGrory Glass, Inc., No. 1:12-cv-10198, 2014 BL 18037 (N.D. Ill. Jan. 23, 2014), Court Opinion

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General Inf ormation

Result(s) Motion Denied, Motion To Dismiss Denied

Related Docket(s) 1:12-cv-10198 (N.D. Ill.)

Topic Civil Procedure; Copyright Law

Industry Glass & Ceramics

Skyline Design, Inc. v. McGrory Glass, Inc., No. 1:12-cv-10198, 2014 BL 18037 (N.D. Ill. Jan. 23, 2014), Court Opinion

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